OPPOSITION No B 2 400 482

Seven S.p.A., Via Fornacino, 96, 10040 Leinì (Torino), Italy (opponent), represented by Buzzi, Notaro & Antonielli d'Oulx, Via Maria Vittoria, 18, 10123 Torino, Italy (professional representative)

a g a i n s t

Sevenfriday AG, Staffelstr. 10, 8045 Zürich, Switzerland (applicant), represented by Studio Legale Bird & Bird, Via Borgogna, 8, 20122 Milano, Italy (professional representative).

On 07/10/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 400 482 is upheld for all the contested goods.

2. European Union trade mark application No 12 915 021 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 12 915 021. The opposition is based on, inter alia, European Union trade mark registration No 8 728 651. The opponent invoked Article 8(1)(b) and 8(4) EUTMR in connection with a company name purportedly used in Italy.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 8 728 651, which was not subject to the request for proof of use made by the applicant.

1. The goods

The goods on which the opposition is based are the following:

Class 18: Goods made of leather and imitations of leather not included in other classes; backpacks, rucksacks, school bags, sling bags for carrying infants, bags, shopping bags, travelling bags and holdalls, bags and holdalls for sport; handbags; bags for campers; beach bags; bags for climbers; satchels; portfolio bags; notecases; pouches (bags); key holders; bum-bags; valises; umbrellas; trunks; walking sticks; overnight bags.

The contested goods are the following:

Class 18: Handbags; Evening handbags; Travelling handbags; Ladies handbags; Purses.

Contested goods in Class 18

The contested Handbags; Evening handbags; Travelling handbags; Ladies handbags; Purses fall under the earlier broader term bags. These goods are therefore identical.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical are directed at the public at large. The degree of attention will be average.

3. The signs

SEVEN	SEVENFRIDAY
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the Czech-speaking part of the relevant public.

The earlier mark and the contested sign have no elements that could be considered clearly more distinctive than other elements. In this regard, it should be noted that neither the word ‘SEVEN’ nor the word ‘FRIDAY’ have any meaning for the relevant Czech-speaking public, which means that there is no question about the distinctiveness of either word.

The earlier mark and the contested sign have no elements that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the word ‘SEVEN’, which is the entire earlier mark. However, they differ in ‘FRIDAY’ in the contested sign.

The first parts of the conflicting marks are identical. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Therefore, the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘SEVEN’, present identically in both signs. The pronunciation differs in the sound of the letters ‛FRIDAY’ of the contested mark, which have no counterpart in the earlier sign. Furthermore, as pointed out above, the signs coincide in their beginnings.

Therefore, the signs are similar to an average degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The marks at issue have been found visually and aurally similar to an average degree and the goods have been found identical.

The fact that the signs ‘SEVEN’ and ‘SEVENFRIDAY’ share the same beginning has been discussed above. The earlier mark is also contained entirely within the contested sign. Further, it has been established that the relevant consumer will not understand the words contained in the signs.

Moreover, evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

For all these reasons the Opposition Division believes that a connection will at least be made between the signs leading consumers to believe that the signs derive from the same or economically linked undertakings.

It remains for the Opposition Division to address the arguments put forward by the applicant.

First, the applicant claims that the earlier mark has an inherently low degree of distinctiveness. From the outset, the Opposition Division would like to remind the applicant that ‘SEVEN’ has been found to have no meaning for the relevant public. Nevertheless, for the sake of completeness, the Opposition Division would like to deal with the applicant’s arguments in full.

The applicant refers to some decisions of the Office and case-law of the European Courts. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

In the present case, the previous cases referred to by the applicant are decisions which date from some time ago. The Opposition Division would like to point the applicant to judgments which have since been handed down from the European courts. For example, in Case T-176/10 of 6 October 2011, the General Court, in discussing the distinctiveness of the number seven, states that:

’36. It is clear from the wording of Article 4 of Regulation No 207/2009 that numerals may be registered as Community trade marks. However, in order to be registered, any sign must meet the requirements laid down in Article 7 of Regulation No 207/2009, which prevents registration of signs not capable of fulfilling the function of indicating to the consumer the commercial origin of the goods and services covered by the application for registration. Therefore, a numeral may be registered as a Community trade mark provided that it is distinctive in relation to the goods and services covered by the application for registration and is not merely descriptive of them (see, to that effect, judgment of 19 November 2009 in Case T‑298/06 Agencja Wydawnicza Technopol v OHIM (1000), not published in the ECR, paragraphs 14 and 15 and the case-law cited).

37. Thus, in the present case, for the purpose of assessing the inherent distinctiveness of the word ‘seven’, the Board of Appeal should have carried out its analysis by reference to the goods at issue, in order to assess the capacity of that word to identify them as coming from a particular undertaking, and thus to distinguish them from those of other undertakings (see, to that effect, Representation of a cowhide, paragraph 35 and the case-law cited, and judgment of 13 December 2007 in Case T‑242/06 Cabrera Sánchez v OHIM – Industrias Cárnicas Valle (el charcutero artesano), not published in the ECR, paragraph 51). Since it does not have any particular link with the goods at issue and, as the applicant submits, is not commonly used in the sector concerned, the word ‘seven’ must be regarded as possessing an average degree of inherent distinctiveness as regards the goods at issue’.

So, even if the earlier mark were understood as referring to the number ‘seven’, which is not the case here as the relevant Czech-speaking public does not understand the word, the Opposition Division holds the view that ‘seven’ does not describe any characteristic of the goods at issue. Therefore, the applicant’s arguments must be set aside.

Likewise, the applicant puts forward arguments regarding the concept conveyed by its mark, ‘SEVENFRIDAY’. It states that ‘SEVENFRIDAY’ is an original expression, a play on words, and conveys the ‘carpe diem’ ideal since the addressee of the message is invited to consider every day of the week as if it were Friday. In other words, every day should be viewed as the last of the working week to be lived with enthusiasm and to the fullest. The applicant also goes on to say that since ‘SEVEN’ has a low distinctive character, ‘FRIDAY’ will be viewed as the most distinctive part of the sign and will serve to distinguish between the marks. However, the Opposition Division would like to remind the applicant once again that the expression ‘SEVENFRIDAY’ will not be understood by the relevant public and is distinctive in its entirety in connection with the goods. This argument must also be set aside.

Considering all the above, there is a likelihood of confusion on the part of the Czech-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the European Union trade mark registration No 8 728 651. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier right European Union trade mark registration No 8 728 651 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(4) EUTMR.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

María Clara IBÁÑEZ FIORILLO

Lucinda Jane CARNEY

Vanessa PAGE

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.